Collective marks and the Polish Herbapol case

07 May 2015

Aleksandra Baczykowska

The recent Polish Herbapol dispute is a case study of a company in Poland seeking to establish registered trade mark protection for its own distinct identity despite operating under an umbrella organisation’s collective trade mark.

Collective marks

European trade mark law makes a distinction between individual trade marks granted for a single company and collective trade marks, which can be granted for an organisation of associated members. A business using a collective trade mark will usually belong to a particular umbrella organisation in which members are linked by common features, such as manufacturing method, quality of products or policy.

Examples of organisations that might use collective trade marks include employers’ associations, chambers of commerce or professional associations. Under this structure, the umbrella organisation remains the sole owner of the collective trade mark, but it may authorise its members to use the mark provided they comply with certain rules relating to their use of the mark. Some famous CTMs that are registered as collective marks include Gruyere, Eurovision and Lurpak

During the Communist era, the Herbal Industry Union (known as 'Herbapol') was a centralised, state-run organisation that produced food, medicinal products and herbal beauty products. In the 1990s, the union was dissolved and most of its manufacturing plants were privatised and became independent companies.

The mark as shown in Figure 1 was registered as a collective trade mark in Poland in 1996 (the Herbapol Collective Mark) and the manufacturing plants that had previously formed part of the Herbal Industry Union operated under the Herbapol Collective Mark. However, as time passed each plant began to add an indicator of geographical origin in their use of the Herbapol Collective Mark.

Figure 1.

The mark as shown in Figure 2 was registered in 2001 by Herbapol Wroclaw as its own, separate Polish trade mark (the Herbapol Wroclaw Mark). In the subsequent dispute, Herbapol Wroclaw argued that the companies that previously comprised the Herbal Industry Union no longer used the same specifications for their products and that a geographical indicator was required in order to differentiate products made in one Herbapol plant from products made in another Herbapol plant.

Figure 2.

In 2012, the Polish Patent Office invalidated the Herbapol Wroclaw Mark due to its similarity with the earlier Herbapol Collective Mark. This decision was recently confirmed in 2015 by Poland’s Supreme Administrative Court.

The conclusion from this case is that, in Poland, a member of an umbrella organisation that uses a collective trade mark cannot for its own use register a separate trade mark containing the original collective trade mark. This applies even if the new trade mark has an additional distinctive element, such as a word or graphic.

It appears that if Herbapol Wroclaw had wanted to protect the Herbapol Wroclaw Mark by registration, this trade mark could only have been registered in favour of the umbrella organisation, where its use would then have been regulated by the rules accepted by associated members. This suggests that registration of a collective trade mark therefore equips the umbrella organisation with full control over its use by associated companies.